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Presented by Stephen G. Nappi, Director Technology Development and Commercialization.

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Presentation on theme: "Presented by Stephen G. Nappi, Director Technology Development and Commercialization."— Presentation transcript:

1 Presented by Stephen G. Nappi, Director Technology Development and Commercialization

2 Discovering Solutions Laser-based bio and explosive threat detection Standoff detection of explosives for security applications Diagnosis of disease through tissue vaporization Treatment for acid mine drainage and fracking Two-tail lipid to inhibit acidic runoff from coal mines Applicable to the fractate and flow-back pools used in hydraulic fracturing Nanomaterials for Water Purification Novel nanomaterials to remove emerging contaminants Applicable to water and wastewater

3 Biomarkers of chronic obstructive pulmonary disorder Early indicators and treatment responses for COPD patients Developing a rapid, cost effective diagnostic kit Determining egg quality to improve assisted reproduction Clinical human assisted reproduction Livestock propagation by enhanced ovulation and in vitro embryo production CLICK IMAGE FOR HIGH RESOLUTION PICTURE Cocaine analogs for the treatment of addiction No available synthetic methods for cocaine analogs Potential therapeutic for drug addiction, ADHD, and neurological disorders Discovering Solutions

4 Developing Technology Licensed (selected) Technology Under Development  Diagnostic technology for breast & other cancers (startup)  Treatment for type II diabetes and obesity (small company)  Treatment for Acute Myeloid Leukemia  Fare collection technology for transit systems (large company)  Endoscopic Suturing Device for Weight Loss  Biosensor for detecting chemical agents (large)  Devices to increase the flow rate of fluids through pipelines, including fuel and chocolate hepatitis B  Therapeutic agents for the treatment of viral infections, including HIV, CFS, hepatitis B (small-international)

5 Temple-Invented Products

6 Diffregen, LLC Niche therapy that converts “differentiates” cancerous cells to normal cells Applications for skin cancers and wrinkle reduction Proplex Technologies Diagnostic and Therapeutic for Breast Cancer Applications for prostate, brain, and other cancers pureNano Technologies Purification of Carbon Nanotubes for Electronics Highest purity levels with significant cost and processing time savings Spinning out New Businesses

7 Invention Disclosures

8 Licenses/Options Executed

9 Gross Licensing Income

10 How it Works: Key Terms  Bayh-Dole Act  Invention and Patent Policy  Invention Disclosure  Patent application (provisional, utility, PCT)  Copyright  U.S. Patent and Trademark Office (USPTO)  U.S. Copyright Office  Confidentiality Agreement  License/Option Agreement  Material Transfer Agreement

11 Assessing New Inventions 1 Disclose the invention via 2 Internal Review: Feedback within 4 weeks Go/No Go Go/No Go 3 Patentability Opinion within 2 weeks Go/No Go 4 Provisional Patent Protection Secured for One Year Marketing activities initiated, partners targeted, feedback received Go/No Go

12  Type of Invention Method or Process: Can it be enforced? Software: Copyright protection applies. Is a patent justified? Composition of matter (NCE): Do you have preliminary data? Device: Has a working prototype been developed?  Commercial Potential Think product backwards What development steps are next? Who will buy? What company will manufacture and sell?  Patent Potential Novelty: Is there anything similar in the public domain? Enablement: Can you demonstrate the invention to someone skilled in the art? Do you have the recipe to duplicate the invention? Non-obviousness: Does a single or a combination of references give other subject matter experts sufficient information to create the invention? Evaluation Considerations

13  Inventorship Apply this test: Conception v. Execution Authorship does not equal Inventorship Courtesy inventorship can lead to invalidation Non-Temple Inventors may equal joint ownership Inventorship is a legal determination – Temple’s patent counsel will decide  Sponsor Obligations Confidentiality IP Ownership and license rights Royalty sharing Publication Acknowledgement  Relevant Publications Will help determine scope of patent Must be disclosed to the USPTO Evaluation Considerations

14  Finding the Right Company Active role in identifying external POC funds (internal funding, Science Center, Ben Franklin, BioAdvance, BioStrategy Partners) Creative marketing to identify licensing partners or entrepreneurs (social networking, conference participation) Building value internally through expert-guided development funding and business plans (Fox School, Drug Discovery Center, App Center) Attracting industry partners through business development  Negotiating the Deal Creative deal-making approach for companies interested in a license Express deal-making approach for startup companies Terms based on industry standards and technology value Common negotiation tactics Working with Industry

15 Income Distribution University's share of Net Income is less than or equal to $500,000 University's share of Net Income is greater than $500,000 40% to Inventors 20% to OTT 14% to Department or Research Unit4% to Department or Research Unit 6% to College or School4% to College or School 20% to University32% to University Net Income = Gross income less patenting, legal, and marketing costs related to an invention

16 Startups Process Creating a Path to Market Criteria Appropriate Technologies Management Identified Potential Conflicts Resolved Agreements Executed Business Plan Developed Minimum Funding Achieved Development Milestones Completed Full License Activated

17 Optimizing the Commercialization Process ProtectionMarketing POC Funding Licensing/ Startup Product Dev/ Incubation Evaluation Research Marketplace InventionCommercialization BioSP EMC Patent Counsel QED BFTP – ECI/NTI MADV USCS IEI

18 Top 10 Points to Remember 1. Inventions should be disclosed upon conception 2. Inventorship is a legal determination made by patent counsel 3. Patent applications must precede public disclosure 4. Disclosure includes journal articles, posters, oral & pre-conference abstracts 5. Disclosure of unpublished information must be protected by a confidentiality agreement 6. Material transfer agreements are necessary for all incoming and outgoing tangible research materials 7. Material transfer and sponsored research agreements may contain confidentiality, publication, and intellectual property requirements 8. Potential conflicts of interest must be reported if inventors have an interest in a spinout company 9. An IP Rider should be signed for consulting agreements, which often conflict with the University policies and employment agreements 10. Patents dohinder publication 10. Patents do not hinder publication

19 Contact Information Stephen G. Nappi Ph: Stay Connected


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